DCT
2:18-cv-09217
Alfred Miller Contracting Co v. Stockton Products Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Alfred Miller Contracting Company (Louisiana)
- Defendant: Stockton Products Inc. (Nevada)
- Plaintiff’s Counsel: Ervin Cohen & Jessup LLP; Ni, Wang & Massand, PLLC
- Case Identification: 2:18-cv-09217, C.D. Cal., 02/15/2019
- Venue Allegations: Venue is alleged based on Defendant maintaining a regular place of business in Burbank, California, and having committed acts of infringement within the judicial district.
- Core Dispute: Plaintiff alleges that Defendant’s fireproofing corner bead product infringes a patent related to a self-aligning corner bead for applying fireproofing to structural steel members.
- Technical Context: The technology concerns construction materials used to simplify and improve the accuracy of applying cementitious fireproofing to the corners of steel I-beams and columns.
- Key Procedural History: The complaint notes a prior lawsuit between the parties involving a related patent (U.S. Patent No. 9,140,005), which was stayed pending an ex parte reexamination of that patent. Plaintiff alleges Defendant represented it would cease selling the accused products during the stay but failed to do so. Subsequent to the filing of this complaint, the patent-in-suit, U.S. Patent No. 10,087,622, was itself the subject of an ex parte reexamination, which concluded with the issuance of a certificate on December 13, 2023, canceling all claims of the patent.
Case Timeline
| Date | Event |
|---|---|
| 2012-10-19 | Plaintiff alleges it began using the invention |
| 2013-06-03 | ’622 Patent Priority Date |
| 2017-01-01 | Defendant allegedly began manufacturing the Accused Instrumentality |
| 2018-04-01 | Defendant allegedly represented it would stop selling accused products |
| 2018-08-01 | Accused product allegedly used by Park Derochie |
| 2018-10-02 | ’622 Patent Issue Date |
| 2019-02-01 | Accused product allegedly used by Barrier Fire Protection |
| 2019-02-15 | First Amended Complaint Filing Date |
| 2023-12-13 | ’622 Patent Reexamination Certificate Issued (All Claims Canceled) |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,087,622 - "Self-Aligning Corner Bead for Fireproofing Structural Steel Member and Method of Using Same"
- Patent Identification: U.S. Patent No. 10,087,622, "Self-Aligning Corner Bead for Fireproofing Structural Steel Member and Method of Using Same," issued October 2, 2018.
The Invention Explained
- Problem Addressed: The patent's background describes the difficulty and skill required to install traditional corner beads for fireproofing structural steel. Aligning these beads to achieve a correct and uniform thickness of fireproofing material is a complex and time-consuming process. (’622 Patent, col. 1:40-48).
- The Patented Solution: The invention is a "self-aligning" corner bead made from a single, V-shaped strip of welded wire fabric. One "wing" of the V is fastened to the structure, while the other wing acts as a screed, or guide, to ensure the fireproofing material is applied to a consistent, predetermined depth. This design is intended to eliminate complex manual adjustments and simplify installation. (’622 Patent, Abstract; col. 2:64-col. 3:17).
- Technical Importance: The invention aims to provide a cost-effective and easy-to-install solution that improves the accuracy and efficiency of applying fireproofing material to steel structures. (Compl. ¶10).
Key Claims at a Glance
- The complaint asserts independent claim 1 and dependent claims 2, 3, 4, 6, and 7. (Compl. ¶33).
- Independent Claim 1:
- a corner bead for fireproofing a member, comprising:
- a welded wire fabric;
- a longitudinal bend integrally formed in the welded wire fabric;
- a first wing defined by the longitudinal bend;
- a second wing defined by the longitudinal bend, extending away from the first wing;
- an adjustable angle between the first wing and the second wing;
- a fire proofing thickness defined by the adjustable angle along a set of adjacent corner sides of the member; and,
- wherein the welded wire fabric is only fastened to the member at a fastening position on the first wing.
- The complaint also asserts infringement of dependent claims adding limitations such as a substrate/nose, a specific angular range, and the wings being flexible strips. (Compl. ¶¶36-40).
III. The Accused Instrumentality
Product Identification
- The "Plastic Nosed Fireproofing FormAid" products ("FormAid"). (Compl. ¶15).
Functionality and Market Context
- The complaint alleges the FormAid product is a version of Defendant's "welded wire Plastic Nose WeepAid® product" designed specifically for fireproofing steel members. (Compl. ¶22). A screenshot from Defendant's website, included in the complaint, states the product's "unique design and shape can also be adjusted in the field to achieve any angle desired," which helps in forming a contour and saves on labor and material. This screenshot describes Defendant's product, PNFFA: Plastic Nose Fireproofing FormAid™, and notes it is "Patent Pending". (Compl. ¶22, p. 5). The complaint alleges that Defendant is the sole manufacturer and sells the product exclusively through a master dealer, Carboline Co. (Compl. ¶22).
IV. Analysis of Infringement Allegations
’622 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a welded wire fabric; | The accused FormAid product is described as being made from "welded wire". | ¶22, ¶35 | col. 9:55-56 |
| a longitudinal bend integrally formed in the welded wire fabric; | The product is shown in images as being bent along its length into a V-shape to form a contour. | ¶22, ¶35 | col. 9:36-38 |
| a first wing defined by the longitudinal bend; | The V-shape of the product necessarily creates two wings extending from the central bend. | ¶35 | col. 9:39-40 |
| a second wing defined by the longitudinal bend, extending away from the first wing; | The V-shape of the product creates a second wing extending from the bend. | ¶35 | col. 9:40-42 |
| an adjustable angle between the first wing and the second wing; | Defendant’s product description states its shape "can also be adjusted in the field to achieve any angle desired." | ¶22, ¶35 | col. 9:43-44 |
| a fire proofing thickness defined by the adjustable angle...; | The product is designed to "aid in forming a contour design when fireproofing beams," implying the angle sets the final shape and thus the thickness of the applied material. | ¶22, ¶35 | col. 9:46-49 |
| wherein the welded wire fabric is only fastened to the member at a fastening position on the first wing. | The complaint alleges infringement of this element. Images show the product installed on a steel beam, and Plaintiff alleges this meets the limitation. An exploded view image shows the accused product installed on a structural beam. (Compl. ¶¶24-25, p. 6). | ¶35 | col. 9:49-53 |
- Identified Points of Contention:
- Scope Questions: A central dispute may concern the limitation "only fastened to the member at a fastening position on the first wing." Infringement will depend on factual evidence of how the FormAid product is installed in practice and whether it is ever fastened on its second wing.
- Technical Questions: The meaning of "adjustable angle" may be contested. The parties may dispute whether the accused product's ability to be "adjusted in the field" meets the specific functional requirements of the claim and whether this adjustment defines the "fire proofing thickness" in the manner claimed by the patent.
V. Key Claim Terms for Construction
The Term: "only fastened to the member at a fastening position on the first wing"
Context and Importance: This negative limitation is highly specific and restrictive. The infringement analysis will hinge on whether the accused product is ever fastened on the second wing during normal installation and use. Proving infringement requires demonstrating not just an action (fastening on the first wing) but the absence of another (fastening on the second wing).
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue "fastened" implies a specific mechanical attachment (e.g., screw, weld), and that incidental support from the second wing pressing against the structure or being embedded in cement does not constitute "fastening."
- Evidence for a Narrower Interpretation: The specification describes attaching the bead with "pneumatic or screw type fasteners." (’622 Patent, col. 3:2-3). This could be used to define "fastened" narrowly as a direct mechanical connection, which may be how the accused product is used. The claim's use of "only" is absolute and may be interpreted strictly by a court.
The Term: "adjustable angle"
Context and Importance: Practitioners may focus on this term because the functionality of both the invention and the accused product centers on the angle between the wings. The scope of "adjustable" will be critical—whether it means simply "not fixed at manufacture" or implies a specific mechanism or range of adjustment.
Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language itself does not specify a mechanism for adjustment, which may support a broad reading covering any corner bead whose angle can be altered from a flat state to a desired V-shape during installation.
- Evidence for a Narrower Interpretation: The patent links the angle directly to defining the "fire proofing thickness." (’622 Patent, col. 9:46-49). This functional language could be used to argue that "adjustable" requires the ability to be precisely set to achieve a specific, uniform thickness, potentially narrowing the term to exclude products with less controlled or uniform adjustability.
VI. Other Allegations
- Willful Infringement: The complaint does not explicitly plead a count for willful infringement. However, it alleges facts that could support such a claim, stating that the "Accused Instrumentality is a deliberate copy of the invention" and that Defendant continued its accused activities after representing to the court in a prior case that it would stop. (Compl. ¶16, ¶¶19-20). These allegations suggest pre-suit knowledge of the patent family and potentially egregious conduct.
VII. Analyst’s Conclusion: Key Questions for the Case
The complaint, as filed, presents a standard infringement dispute. However, procedural developments subsequent to the filing radically alter the landscape of the case. The key questions are:
- A dispositive threshold question will be one of viability: given that the provided ex parte reexamination certificate, issued after the complaint was filed, canceled all asserted claims of the ’622 patent, what legal basis, if any, remains for this infringement action to proceed?
- A core issue of claim scope will be whether the negative limitation "only fastened... on the first wing" can be proven. The outcome may depend on factual evidence of how installers use the accused product in the field and whether alternative, non-infringing installation methods exist and are used.
- A key evidentiary question will be one of functionality: does the accused product's feature of being "adjusted in the field" perform the same function in the same way to achieve the same result as the "adjustable angle" required by the asserted claims, particularly with respect to defining a specific "fire proofing thickness"?